Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 1 of 21
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
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`v.
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`FITBIT, INC.,
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`Plaintiff,
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`Defendant.
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`Civil Action No. 1:19-cv-11586-FDS
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`PLAINTIFF’S MEMORANDUM IN OPPOSITION TO FITBIT’S
`MOTION TO STRIKE, IN PART, THE INFRINGEMENT EXPERT
`REPORT AND OPINIONS OF DR. TOM MARTIN PURSUANT TO FED.
`R. CIV. P. 37(c)(1) AND LOCAL RULE 16.6(d)
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 2 of 21
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................................. 1
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`LEGAL STANDARDS ...................................................................................................... 2
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`PHILIPS’S INFRINGEMENT CONTENTIONS ADEQUATELY DISCLOSED ITS
`ALLEGATIONS REGARDING EACH OF THE ACCUSED PRODUCTS .................... 3
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`PHILIPS ADEQUATELY ALLEGED INFRINGEMENT BY FITBIT’S CARDIO
`FITNESS SCORE FEATURE, WHICH INCLUDES CARDIO FITNESS SCORES
`CALCULATED USING GPS DATA, IN ITS INFRINGEMENT CONTENTIONS ....... 5
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`PHILIPS ADEQUATELY DISCLOSED ITS ALLEGATIONS OF JOINT
`INFRINGEMENT............................................................................................................. 10
`
`A.
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`B.
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`C.
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`Fitbit’s Motion Ignores Philips’s March 17, 2020 Supplemental Infringement
`Disclosures That Detailed Its Allegations of Joint Infringement.......................... 10
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`Philips’s Disclosures Satisfy Local Rule 16.6(d)(5) ............................................. 12
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`Philips’s March 17, 2020 Disclosures Provided Additional Supplementation to
`Philips’s Response to Fitbit’s Interrogatory No. 9................................................ 14
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`D.
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`Any Failure to Adequately Respond to Interrogatory No. 9 Was Harmless ........ 15
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`CONCLUSION ................................................................................................................. 16
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`i
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 3 of 21
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Abiomed, Inc. v. Maquet Cardiovascular LLC,
`2020 WL 4201187 (D. Mass. July 22, 2020) .................................................................... 2, 3, 15
`
`Apple Inc. v. Samsung Electronics Co., Ltd.
`5:12–CV–0630–LHK–PSG, 2014 WL 173409 (N.D.Cal. Jan. 9, 2014) .................................... 2
`
`CardiAQ Valve Techs., Inc. v. Neovasc Inc.,
`2016 WL 8203206 (D. Mass. Apr. 25, 2016) ........................................................................... 14
`
`DCG Sys. v. Checkpoint Techs. LLC,
`No. C 11-03792, 2012 WL 1309161 (N.D. Cal. Apr. 16, 2012) .............................................. 13
`
`Digital Reg. of Texas, LLC v. Adobe Systems Inc.,
`No. CV 12–01971, 2014 WL 1653131 (N.D. Cal. Apr. 24, 2014) ....................................... 2, 14
`
`Fenner Investments Ltd. v. Hewlett-Packard Co.,
`No. 6:08-cv-273, 2010 WL 786606 ...................................................................................... 7, 12
`
`L & W, Inc. v. Shertech, Inc.,
`471 F.3d 1311 (Fed. Cir. 2006)................................................................................................... 4
`
`Milos Misha Subotincic v. 1274274 Ontario Inc.,
`No. SACV 10-01946, 2013 WL 3964994 (C.D. Cal. Apr. 9, 2013) .......................................... 4
`
`Nalco Co. v. Chem-Mo, LLC,
`883 F.3d 1337 (Fed. Cir. 2018)................................................................................................. 13
`
`Pechner-James v. City of Revere,
`2006 WL 8458106 (D. Mass. Oct. 20, 2006)............................................................................ 14
`
`Pulse Elecs., Inc. v. U.D. Elec. Corp.,
`No. 3:18-cv-00373, 2021 WL 981123 (S.D. Cal. Mar. 16, 2021) .............................................. 4
`
`Realtime Data LLC v. NetApp, Inc.,
`No. 6:16-cv-00961, 2017 WL 4844254 (E.D. Tex. Oct. 26, 2017) .................................... 5, 6, 7
`
`Wi-Lan Inc. v. LG Elecs., Inc.,
`No. 18-cv-01577, 2019 WL 5790999 (S.D. Cal. Sept. 18, 2019)............................................. 13
`
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`ii
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 4 of 21
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`
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`Introduction
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`Plaintiff Philips North America LLC (“Philips”) respectfully requests that this Court deny
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`Fitbit LLC’s (“Fitbit”) Motion to Strike, in Part, the Infringement Expert Report and Opinions of
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`Dr. Tom Martin Pursuant to Fed. R. Civ. P. 37(c)(1) and Local Rule 16.6(d). Dkt. 268 (“Motion);
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`see also Dkt. 269 (“Memorandum”).
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`Philips provided over three hundred pages of infringement contentions that demonstrated
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`how the accused Fitbit products met each element of the asserted claims of the ’377 Patent. These
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`contentions identified with specificity each of the nine currently accused products and methods,
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`each asserted claim of the ’377 Patent, an element-by-element description of where and how each
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`element of each asserted claim is found in each accused product and method, as well as Philips’s
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`allegations with regard to direct, indirect, and joint infringement. See Exs. 1-9, Dkt. 270-9, Dkt.
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`270-10, Dkt. 270-11. Dr. Martin, Philips’ infringement expert, drafted an opening report consistent
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`with Philips’s contentions.
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`Contrary to Fitbit’s allegations, Dr. Martin’s Report did not present any new infringement
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`theories. For instance, as explained below Philips’s infringement contentions included detailed
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`claim charts for each of the nine currently accused products and, consistent with that approach, Dr.
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`Martin provided opinions as to how each of the accused products infringe, including by physically
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`inspecting four of the accused products. Fitbit claims (without citing any relevant authority) that
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`Philips should have disclosed in its contentions that Dr. Martin might only physically test some of
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`the accused products. Further, Dr. Martin discusses the Cardio Fitness Score functionality that
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`Philips specifically identified in its claim charts as infringing, yet Fitbit contends that it had no
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`notice that Philips was accusing Cardio Fitness Scores calculated via the Run model. Finally, as
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`explained below, Philips’s contentions regarding joint infringement exceeded the requirements of
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`Local Rule 16.6(a)(vii), and thus Fitbit’s argument that they were inadequate rings hollow.
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`1
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 5 of 21
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`Because Fitbit has not identified any portions of Dr. Martin’s Report that present infringement
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`theories not properly disclosed, the Court should deny Fitbit’s motion.
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`
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`Legal Standards
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`Local Rule 16.6(d)(1) governs disclosure of infringement contentions and provides:
`[T]he patentee shall make the following disclosures:
`(A) Infringement Claim Charts. Infringement claim charts identifying with as much
`specificity as reasonably possible from publically available information or other
`information then within the patentee’s possession, custody or control:
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`
`(i)
`each accused product and/or method
`(iii)
`an element-by-element description of where and how
`each element of each asserted claim is found in each
`accused product or method
`if any alleged infringement is based on the acts of
`multiple parties, the role of each such party in the
`infringement.
`L.R. 16.6(d)(1)(A)(i), (iii), (vii).
`“In patent litigation, expert reports are expected to provide more information than is
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`(vii)
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`contained in infringement contentions.” Digital Reg. of Texas, LLC v. Adobe Systems Inc., No. CV
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`12–01971, 2014 WL 1653131 at *2 (N.D. Cal. Apr. 24, 2014). When deciding whether to strike
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`an expert report, the question is “has the expert permissibly specified the application of a disclosed
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`theory, or has the expert impermissibly substituted a new theory altogether?”. Apple Inc. v.
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`Samsung Electronics Co., Ltd., 5:12–CV–0630–LHK–PSG, 2014 WL 173409, at *1 (N.D.Cal.
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`Jan. 9, 2014).
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`Preclusion under Fed. R. Civ. P. 37(c)(1) “is not a mandatory sanction if the late disclosure
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`is harmless”. Abiomed, Inc. v. Maquet Cardiovascular LLC, 2020 WL 4201187, at *3 (D. Mass.
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`July 22, 2020).
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`2
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 6 of 21
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`
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`Philips’s Infringement Contentions Adequately Disclosed Its Allegations Regarding
`Each of the Accused Products
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` Dr. Martin’s Report provided an opinion based on the ample disclosure provided by
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`Philips regarding its infringement contentions as to each accused product. As Fitbit admits, Philips
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`has provided from the outset of the case separate claim charts for each accused product. See Dkt.
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`269 (“Fitbit Mem.”) at 12. And each of those claim charts provide evidence (such as user manuals)
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`specific to the respective accused product. See generally Exs. 1-9.
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`In Dr. Martin’s report, he notes that he personally tested four of the accused products
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`(specifically the Fitbit Ionic, Versa 2, Inspire HR, and Charge 2). Dkt. 270-2 (under seal) at ¶ 47.
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`Dr. Martin provided substantial evidentiary support, including user manuals and internal Fitbit
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`documents, which demonstrated that each of the accused products had the same relevant features
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`as the four accused products tested by Dr. Martin.1 . Id. (“I provide the technical documentation
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`that shows the functionality that I have personally tested in the Representative ’377 Devices is
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`shared by the rest of the ’377 Devices . . . .”) Dr. Martin also noted where there were differences
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`in functionality between the products he tested and those he did not.2 Id. (“I note when there are
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`relevant differences among the different ’377 Devices.”). Dr. Martin concluded that the results of
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`his tests on the four products he tested were exemplary of the other five accused products. Id. at ¶
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`1 For instance, after discussing in detail how the Fitbit Ionic provides number of steps, active minutes, heart rate, and
`distance, Dr. Martin opines that “The user manual for each of the other ’377 Devices similarly demonstrates that
`each of the ’377 Devices provide number of steps, active minutes, heart rate, and distance. See PNA-FB0001103 at
`1138 (Versa); PNA-FB0000959 at 996 (Versa 2); PNA-FB0001039 at 1069-1070 (Versa Lite Edition); PNA-
`FB0000502 at 518 (Charge 2); PNA-FB0000545 at 574 (Charge 3); PNA-FB0000777 at 802 (Inspire HR); PNA-
`FB0000294 at 309 (Alta HR); PNA-FB0000457 at 473 (Blaze).” Dkt. 270-2 (under seal) at ¶ 67. Dr. Martin then
`explains how he personally tested the Ionic, Versa 2, Charge 2, and Inspire HR devices and confirmed that they did
`in fact provide number of steps, active minutes, heart rate and distance. See id. at ¶¶ 68-70,
`2 For example, when discussing GPS Tracking in relation to the Cardio Fitness Score, Dr. Martin notes that “While
`the Ionic has GPS built into the device itself, all but one of the other ’377 Devices (Blaze, Charge 2, Charge 3,
`Inspire HR, Inspire 2, Versa, Versa 2, Versa Lite) make use of the GPS functionality on the user’s smartphone in a
`feature called “connected GPS”.” Dkt. 270-2 (under seal) at ¶ 158. In a footnote, Dr. Martin further explains that “I
`note that the Alta HR does not have any GPS capabilities and thus users will only receive a Cardio Fitness Score in
`the form of a range based on the resting heart rate model calculation.” Id. at ¶ 158, n. 8.
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`3
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 7 of 21
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`47 (“Having analyzed technical documentation for each of the ’377 Infringing Products, I have
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`concluded that when used each of the ’377 Infringing Products practices the methods claimed by
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`Claims 1, 4, 5, 6, 9, and 12 of the ’377 Patent (“the ’377 Asserted Claims”) in a substantially
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`similar manner.”)
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`Fitbit appears to argue that by providing more disclosure in its infringement contentions
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`than just charting representative products, Philips somehow waived its right to have its expert
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`determine that, based on the evidence, the products operate in similar fashion. Fitbit has provided
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`no authority to that effect. Further, Fitbit cites to no authority that a patent holder is required to
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`disclose the testing strategy of its infringement expert prior to the opening expert reports.3 To the
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`extent that Fitbit disagrees with Dr. Martin’s conclusions regarding his testing of four of the
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`accused products, Fitbit is free to explore that issue during Dr. Martin’s deposition. Further, to the
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`extent Fitbit believes Philips is not meeting its burden of proof with regard to showing
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`infringement, that issue could be raised at summary judgment, but is not appropriate in a motion
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`to strike.
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`Thus, because Philips’s infringement contentions adequately disclosed its infringement
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`theories as to each of the accused products, the Court should deny Fitbit’s motion as to the so-
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`called “Representative Product Infringement Theory”.
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`3 Fitbit’s citation to L&W is inapposite as that case only discussed the burden of proof patent holders have at summary
`judgment and does not mention disclosure requirements. L & W, Inc. v. Shertech, Inc., 471 F.3d 1311, 1318 (Fed. Cir.
`2006). Similarly, in Milos Misha the court simply held that the patent holder’s claim charts that only charted one
`product did not provide adequate disclosure of its contentions with regard to other products after the “representative”
`product was found to not infringe. Milos Misha Subotincic v. 1274274 Ontario Inc., No. SACV 10-01946, 2013 WL
`3964994, at *6-7 (C.D. Cal. Apr. 9, 2013). Finally, Pulse Elecs. discusses the proof needed to show representativeness,
`not disclosure requirements. Pulse Elecs., Inc. v. U.D. Elec. Corp., No. 3:18-cv-00373, 2021 WL 981123, at *19 (S.D.
`Cal. Mar. 16, 2021).
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`4
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 8 of 21
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`
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`Philips Adequately Alleged Infringement by Fitbit’s Cardio Fitness Score Feature,
`Which Includes Cardio Fitness Scores Calculated Using GPS Data, in its
`Infringement Contentions
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`Philips’s Infringement Contentions clearly identified “Cardio Fitness Score” as meeting
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`the “calculated response,” aspect of the asserted claims. See, e.g., Dkt. 270-12 at 20 of 27 (“The
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`method of the Accused Product involves receiving a variety of different calculated responses from
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`the servers (such as cardio fitness score, heart rate zones, and resting heart rate) . . .”).
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`Additionally, Philips’s infringement contentions provided an example of a Cardio Fitness Score
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`as displayed in the Fitbit App.
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`Dkt. 270-12 at 21 of 27.
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`Certainly, this alone would be enough to disclose to Fitbit that the Cardio Fitness Score
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`feature on the Fitbit App—in all of its forms4—was accused of infringement. See, e.g., Realtime
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`4 As explained in Fitbit’s brief and Dr. Martin’s Report, Fitbit has two methods of calculating Cardio Fitness Score,
`the Resting Heart Rate (“RHR”) model and the “Run” model. See Fitbit Br. at 10; Dkt. 270-2 (under seal) at ¶¶ 139-
`157.
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`5
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 9 of 21
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`Data LLC v. NetApp, Inc., No. 6:16-cv-00961, 2017 WL 4844254, at *2 (E.D. Tex. Oct. 26, 2017)
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`(finding “zero-block deduplication” was adequately disclosed because the broader “Global thin
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`provisioning” feature was identified which included zero-block deduplication); Unwired Planet,
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`LLC v. Apple Inc., No. 13-cv-04134 (N.D. Cal. Feb. 2, 2017) (holding that accusing specific third-
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`party servers as meeting a claim limitation was consistent with the infringement contentions’
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`disclosure of “server(s) involved in App Store processing”).
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`And Fitbit cannot dispute that the Cardio Fitness Score calculated via the Run model is a
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`part of the general Cardio Fitness Score feature, which is exactly what Philips’s contentions
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`identify. Indeed, the very documents Fitbit cites to in order to show that Philips was on notice of
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`the “distinctions” between the two different ways of calculating Cardio Fitness Scores (Fitbit
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`Mem. at 10) simply confirms that, regardless of the method of calculation, both are simply
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`referred to as Cardio Fitness Scores. For instance, the Fitbit Help webpage that Fitbit cites to is
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`entitled “What is my cardio fitness score” and goes on to discuss both methods of calculating
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`cardio fitness score under the headings “How does Fitbit measure my cardio fitness score” and
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`“How do I get a more precise estimate of my score”. Dkt. 270-13 at 2-3 of 5. Similarly the Fitbit
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`News article cited by Fitbit discusses how a user’s Cardio Fitness Score can be calculated via the
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`RHR or Run method and uses the term “Cardio Fitness Score” to describe both results. Dkt. 270-
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`14 at 3-4 of 5 (“Fitbit automatically provides you with a Cardio Fitness Level in the app using your
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`resting heart rate and user profile. You can obtain a more precise Cardio Fitness Score & Level by
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`going for a run of at least 10 minutes . . . . The higher your Cardio Fitness Score, the better your
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`cardiovascular fitness.”).
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`6
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 10 of 21
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` Thus, Fitbit’s own
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`marketing and internal documents as well as their own technical witness demonstrate that Philips’s
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`reference to “cardio fitness score” would be understood to encompass Cardio Fitness Scores
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`calculated using both the RHR and Run models.
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`Despite the fact that Philips’s infringement contentions clearly identified “cardio fitness
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`score”, Fitbit (while ignoring this accompanying text) appears to claim that by providing an
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`exemplary screenshot showing a Cardio Fitness Score that happened to be calculated via the RHR
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`model, Philips somehow disclaimed Cardio Fitness Scores calculated via the Run model. Fitbit
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`cites to no authority for the proposition that providing an example in claim charts limits
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`infringement contentions to that specific example when the patent holder explicitly discloses a
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`broader category as Philips did here. And in fact, courts have held the opposite, namely that
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`referring generally to a broader category provides disclosure of more specific functionality even
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`when the contentions identify other examples. See, e.g., Realtime, 2017 WL 4844254, at *3
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`(finding disclosing “deduplication” generally was adequate disclosure of “post-process
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`deduplication” despite specifically identifying two other forms of deduplication); Fenner
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`Investments Ltd. v. Hewlett-Packard Co., No. 6:08-cv-273, 2010 WL 786606, at * (E.D. Tex. Feb.
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`26, 2010) (finding that infringement contentions adequately disclosed other operating systems
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`when only one was specifically identified); see also Unwired Planet, LLC v. Apple Inc., No. 13-
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`cv-04134 (N.D. Cal. Feb. 2, 2017).
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`7
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 11 of 21
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`Further, the screenshot of the Cardio Fitness Score in Philips’s infringement contentions
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`was plainly meant to demonstrate how Cardio Fitness Scores (however calculated) are accessed
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`and displayed on the Fitbit App. This is seen by the fact that the Cardio Fitness Score screenshot
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`used in Philips’s infringement contentions (that happened to show a Cardio Fitness Score
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`calculated using the RHR method) shows the exact same page on the Fitbit App that a Cardio
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`Fitness Score calculated using the Run method would appear on. This is demonstrated by
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`comparing the two images below. The first is from Philips’s infringement contentions showing the
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`Cardio Fitness Score that was obtained using the RHR model (the red box was added in the
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`contentions to highlight the score) and the second is from Dr. Martin’s report showing a Cardio
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`Fitness Score he obtained that was calculated using the Run model—displayed in the same way
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`on the same screen.
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`Dkt. 270-12 at 21 of 27 (red box in original)
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`Dkt. 270-2 (under seal) at ¶ 163 (page 112).
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`Thus, by providing the screenshot of the Cardio Fitness Score page on the Fitbit App in its
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`contentions, Philips was not attempting to limit its contention regarding “cardio fitness score” to
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 12 of 21
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`just the cardio fitness score calculated using the RHR method, but was instead illustrating how the
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`Cardio Fitness Score (calculated under either method) is accessed and displayed in the Fitbit App.
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`As noted above, Philips infringement contentions disclosed Philips’s infringement
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`allegations with regard to Cardio Fitness Scores calculated via the Run model. As Fitbit admits,
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`such calculations “utilize[] GPS data”. Fitbit Memo. at 10. Thus, Philips’s disclosure of the Cardio
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`Fitness Scores calculated via the Run model also served to put Fitbit on notice that the GPS data
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`would be at issue.
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`Additionally, Philips’s infringement contentions also identified “distance” as one type of
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`“data indicating an amount of exercise performed by the subject” that is received by the Fitbit App.
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`As shown in the below screenshot included in Philips’s contentions, this distance data is calculated
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`by Fitbit using a user’s stride length or GPS.
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`9
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 13 of 21
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`Dkt. 270-12 at 14 of 27 (highlighting added). This serves as an additional form by which Philips
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`disclosed GPS data in its contentions.
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`Thus, because Philips adequately disclosed its infringement allegations regarding Cardio
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`Fitness Scores calculated using the Run model, the Court should deny Fitbit’s Motion as to the
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`corresponding portions of Dr. Martin’s Report.
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`
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`Philips Adequately Disclosed Its Allegations of Joint Infringement
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`A.
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`Fitbit’s Motion Ignores Philips’s March 17, 2020 Supplemental Infringement
`Disclosures That Detailed Its Allegations of Joint Infringement
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`Philips adequately disclosed its allegations of joint infringement in its infringement
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`disclosures and in its response to Fitbit’s Interrogatory No. 9, which incorporated Philips’s
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`10
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 14 of 21
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`infringement disclosures. See Dkt. 270-3 at 4 of 5 (“Philips also refers Fitbit to its disclosures
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`under L.R. 16.6(d)(1)”.). Fitbit incorrectly claims that Philips “reneged” on an agreement to
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`supplement its response to Fitbit’s Interrogatory No. 9. What Fitbit failed to mention was that
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`Philips served supplemental infringement disclosures on March 17, 2020, the very day by which
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`Philips agreed to provide further details regarding, among other things, its joint infringement
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`contentions. See Dkt. 270-5 at 2-3; Dkt. 270-10 at 8. Despite making an exhibit out of these
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`disclosures (Dkt. 270-10), Fitbit does not address these disclosures in the portion of its
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`memorandum regarding Philips’s allegations of joint infringement beyond making a conclusory
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`statement that Philips’s contentions did not disclose the elements of joint infringement (See Fitbit
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`Memo. at 6).
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`This failure by Fitbit is significant because, as shown below, these disclosures provide the
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`very information Fitbit claims Philips never disclosed:
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`Fitbit has directly infringed the claims of the ’377 Patent by jointly
`infringing with its customers. While Fitbit provides the accused
`activity tracker devices and the Fitbit App, the customer provides
`the mobile device running the Fitbit App. Fitbit and its customers
`then jointly perform the method covered by the ’377 patent as
`charted. Indeed, a customer only receives the benefits of the Fitbit
`products and services once he sets up a wireless connection between
`an activity tracker and the Fitbit App as described in Fitbit materials
`and the charted contentions, as instructed by Fitbit. Fitbit maintains
`control and supervision of requiring its users to maintain authorized
`accounts. Further, the customers directly infringe by using the Fitbit
`system, App and services through their account.
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`Dkt. 270-10 at 9 of 14.
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`
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`Of note, the above disclosure explicitly refers to how a user would perform the method
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`covered by the ’377 patent and receive the benefits of the products and services as charted in the
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`11
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 15 of 21
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`previously served contentions, incorporating into this disclosure the charted infringing features
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`and benefits thereof in support of Philips’s Joint Infringement allegations.
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`Philips’s Disclosures Satisfy Local Rule 16.6(d)(5)
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`B.
`Philips’s infringement contentions adequately disclose the “role of each . . . party in the
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`
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`infringement” as required by L.R. 16.6(d)(1)(A)(vii). Specifically, as shown above, Philips’s
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`March 17, 2020 supplement to its infringement disclosures describes the role of Fitbit as
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`“provid[ing] the accused activity tracker devices and the Fitbit App” as well as “maintain[ing]
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`control and supervision of [sic] requiring its users to maintain authorized accounts”. Dkt. 270-10
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`at 9 of 14. Likewise, the March 17, 2020 supplement describes the role of Fitbit’s customers as
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`“provid[ing] the mobile device running the Fitbit App”, “set[ting] up a wireless connection
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`between an activity tracker and the Fitbit App”, and “us[ing] the Fitbit system, App, and services
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`through their account”. Id.
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`Further, Philips’s infringement chart demonstrates the various steps performed by Fitbit’s
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`customers as described in Dr. Martin’s report. See Dkt. 270-15 (under seal) at ¶ 261. For instance,
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`Philips’s infringement contentions cite Fitbit’s user manuals, which instruct users to download the
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`Fitbit App to a smartphone and pair the ’377 device to the smartphone running the Fitbit App. See,
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`e.g., Dkt. 270-12 at 3-4 of 27. This clearly illustrates that it is Fitbit’s customers that perform the
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`downloading and pairing step. Similarly, Philips’s infringement claim charts identify that the user
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`interface is rendered on the web-enabled wireless phone via the Fitbit App. See, e.g., Dkt. 270-12
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`at 3-4 of 27. Taken with Philips’s March 17, 2020 supplemental infringement disclosures which
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`describe the Fitbit customer as “using the Fitbit system, App and services”, Philips’s contentions
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`clearly demonstrate that this limitation is performed when the Fitbit customer uses the Fitbit App,
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`which renders the user interface. Dr. Martin provides the same opinion, noting that a user who
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`opens the Fitbit App will have practiced this limitation. See Dkt. 270-15 (under seal) at ¶ 73. Fitbit
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 16 of 21
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`misstates Dr. Martin’s testimony by arguing that this means that Dr. Martin is purporting that the
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`Fitbit customer is somehow literally rendering a user interface on the web-enabled wireless phone
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`themselves instead of opening the Fitbit App, which does the actual rendering. See Fitbit Mem. at
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`8.
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`
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`Fitbit has provided no authority that Local Rule 16.6(d) requires more than what was
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`disclosed by Philips’s infringement contentions. For instance, Fitbit does not provide authority for
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`its contention that the Local Rules require a disclosure of a “specifically identified benefit” upon
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`which performance of the claimed steps is conditioned. Fitbit’s citation to NalcoCo. is inapposite
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`as that case is about the pleading requirements, not what must be disclosed under L.R. 16.6(d)(5).
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`See Nalco Co. v. Chem-Mo, LLC, 883 F.3d 1337, 1351-52 (Fed. Cir. 2018). Similarly, Fitbit
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`provides no authority that, under the local rules, a patent holders’ contentions must “provide . . .
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`indication of how Fitbit allegedly determines the manner of the user’s performance of every
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`element of claim 1”. Fitbit Mem. at 7; see also DCG Sys. v. Checkpoint Techs. LLC, No. C 11-
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`03792, 2012 WL 1309161, at *2 (N.D. Cal. Apr. 16, 2012) (noting that patent local rules do not
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`“require the disclosure of specific evidence nor do they require a plaintiff to prove its infringement
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`case”); Wi-Lan Inc. v. LG Elecs., Inc., No. 18-cv-01577, 2019 WL 5790999, at *4 (S.D. Cal. Sept.
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`18, 2019) (“infringement contentions need not disclose specific evidence”). Yet, to the extent the
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`Court determines that either are required in addition to identifying the “role of each . . . party in
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`the infringement” (L.R. 16.6(d)(1)(A)(vii)), Philips’s contentions nonetheless met that high
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`burden.
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`For instance, Philips’s March 17, 2020 supplemental infringement disclosures identify that
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`Fitbit’s customers receive “the benefits of the Fitbit products and services” and as Fitbit’s
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`memorandum notes, Philips’s infringement chart identifies those services, including Cardio
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 17 of 21
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`Fitness score. Dkt. 270-10 at 9 of 14; Fitbit Mem. at 6-7; Dkt. 270-12 at 20-21 of 27. Likewise,
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`Philips’s March 17, 2020 supplemental infringement disclosures identify that “Fitbit maintains
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`control and supervision of requiring its users to maintain authorized accounts.” Dkt. 270-10 at 9
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`of 14. Dr. Martin’s report does not include a new theory but only applied the joint infringement
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`theory disclosed in Fitbit’s infringement contentions. See Digital Reg. of Texas, LLC v. Adobe
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`Systems Inc., No. CV 12–01971–CW (KAW), 2014 WL 1653131 at *2 (N.D. Cal. Apr. 24, 2014).
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`C.
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`Philips’s March 17, 2020 Disclosures Provided Additional Supplementation
`to Philips’s Response to Fitbit’s Interrogatory No. 9
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`Philips objected to Fitbit’s Interrogatory No. 9 as both “inconsistent with the requirements
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`of the Local Rules and the Court’s Scheduling Order” and “premature to the extent a full response
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`may rely on expert testimony”. As discussed above, Philips’s Response to Interrogatory No. 9
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`incorporated its infringement disclosures5, and thus Philips’s supplement to those disclosures on
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`March 17, 2020 also served to supplement Philips’s Response to Interrogatory No. 9. Even if the
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`March 17, 2020 disclosures are not considered to supplement Philips’s Response to Interrogatory
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`No. 9, there is no duty to formally supplement under Rule 26(e) unless “the additional or corrective
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`information has not otherwise been made know to the other parties during the discovery process
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`or in writing”. Fed. R. Civ. P. 26(e)(1)(A); see also, e.g., Pechner-James v. City of Revere, 2006
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`WL 8458106, at *4 (D. Mass. Oct. 20, 2006) (slip opinion); CardiAQ Valve Techs., Inc. v. Neovasc
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`Inc., 2016 WL 8203206, at *6 (D. Mass. Apr. 25, 2016). As discussed above, this supplement
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`provided more than enough disclosure to satisfy the Local Rules Requirement and Philips believes
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`they similarly adequately provided a response to Fitbit’s Interrogatory No. 9.
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`To the extent Fitbit believes that Philips’s answer (including its infringement disclosures)
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`were lacking in some way, Philips deferred the rest of its answer to Fitbit’s Interrogatory No. 9 to
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`5 See Dkt. 270-3 at 4 of 5 (“Philips also refers Fitbit to its disclosures under L.R. 16.6(d)(1)”.).
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`14
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`Case 1:19-cv-11586-FDS Document 286 Filed 01/19/22 Page 18 of 21
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`its expert testimony. See Dkt. 270-3 at 4 of 5 (“Philips may supplement the response to this
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`interrogatory . . . via the disclosure of expert testimony”). If Fitbit believed Philips should have
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`been required to provide a more detailed answer its Interrogatory sooner, it could have moved to
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`compel prior to the close of fact discovery, but chose not to.
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`Any Failure to Adequately Respond to Interrogatory No. 9 Was Harmless
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`D.
`Additionally, relief under Rule 37(c)(1) cannot be granted if the failure is harmless. Fed.
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`R. Civ. P. 37(c)(1); see also Abiomed, Inc. v. Maquet Cardiovascular, No. 16-10914, 2020 WL
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`4201187, at *3 (D. Mass July 22, 2020) (“preclusion is not a mandatory sanction if the late
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`disclosure is harmless”). Here, Fitbit was not harmed in any way by any alleged failures by Philips
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`to supplement its answer to Interrogatory No. 9. Specifically, as discussed above, Fitbit was on
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`notice of Philips’s joint infringement allegations regarding the steps performed by each party, the
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`control and supervision of Fitbit, and the products and services that users received as benefits from
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`Fitbit in return for performing the infringing steps. Fitbit had the opportunity to explore any and
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`all of these avenues during fact and expert discovery. Their failure to